How can an applicant overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

To overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication, an applicant can take the following steps:

• Prove earlier invention date: Show that the invention was conceived and reduced to practice before the critical date (one year prior to the U.S. filing date).
• Challenge publication date: Provide evidence that the reference was not publicly accessible before the critical date.
• Argue non-enablement: Demonstrate that the reference does not enable one skilled in the art to make the invention without undue experimentation.
• Show different invention: Argue that the reference does not disclose every element of the claimed invention.

The MPEP states: A rejection based on pre-AIA 35 U.S.C. 102(b) can be overcome by:

• (A) Persuasively arguing that the claims are patentably distinguishable from the prior art;
• (B) Amending the claims to patentably distinguish over the prior art;
• (C) Submitting and perfecting a claim to priority under 35 U.S.C. 119(a)-(d) within the time period set in 37 CFR 1.55;
• (D) Submitting and perfecting a benefit claim under 35 U.S.C. 119(e) or 120 within the time periods set in 37 CFR 1.78; or
• (E) Submitting a declaration under 37 CFR 1.131(a).

Source: MPEP 2133.02(a)